A federal court in Texas has determined that counsel for Apple had no basis for bringing to a premature close the deposition of one of its engineering managers in a lawsuit asserting VirnetX’s patent against an Apple patent application. VirnetX Inc. v. Cisco Sys., Inc., No. 6:10-CV-417 (U.S. Dist. Ct., E.D. Tex., Tyler Div., decided August 8, 2012). According to the court, counsel refused to allow Apple’s witness to answer questions about VirnetX’s patent, which VirnetX alleges protects ideas identical to those in Apple’s patent application. The witness was listed in Apple’s application as a co-inventor. Apple’s objection was that the witness should be allowed to review the entire patent specification and prosecution history rather than the single claim about which VirnetX’s counsel sought to question the witness. While the witness confirmed that he understood the claim, Apple’s counsel did not allow him to answer how that claim differed from what Apple tried to patent.  

The court found that Apple’s counsel “had no justification under Rule 30 to terminate the deposition. The deposition was not conducted in a manner that annoyed, embarrassed, or oppressed [the witness]. . . . Merely disagreeing with a particular line of questioning is not justification to shut down the deposition.” Thus, the court denied Apple’s motion for a protective order and granted VirnetX’s motion for sanctions. In addition to the payment of reasonable attorney’s fees and costs related to these motions, the court gave Apple a choice: produce the witness to complete his deposition at the convenience of the opposing party and pay all related costs, or forego further deposition and then (i) be precluded from calling the witness at trial and (ii) agree to an adverse inference instruction to the jury.  

If Apple chooses to complete the deposition, no further communications with the witness about the patents to which he was testifying will be allowed, and “[t]o the extent Apple has communicated with [the witness] about the patents since his deposition was terminated, Apple and [the witness] are deemed to have waived any privilege they might otherwise assert as to these conversations, and the witness will truthfully answer any and all questions regarding any such communications between [the witness] and Apple or any of its counsel, employees or representatives. Apple is precluded from asking any questions of the witness with regard to the comparison of the two patents.”